DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to an ion-selective membrane, an ion-selective electrode, an ion sensor, and a specimen testing device, classified in G01N 27/333.
II. Claims 18-24, drawn to a "complex compound," classified in C07D 487/22.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the compound of formula 1 of the ion-selective membrane (claim 1) does not require the particular substitution of formula 4 (claim 18) or formula 5 (claim 22). The subcombination has separate utility such as serving as a catalyst for the oxidation of olefins.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different groups/subgroups or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Independent claim 1 is generic to the following disclosed patentably distinct species: ionophores P-1 through P-28 (pages 24-28 of specification). The species are independent or distinct because each ionophore has a differing electronic and/or steric profile. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1 and 5-17 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
(a) the species require a different field of search (for example, searching different groups/subgroups or electronic resources, or employing different search queries);
(d) the prior art applicable to one species would not likely be applicable to another species.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone voicemail message from Jason Okun on 27 May 2026, a provisional election was made to prosecute the invention of Group I, claims 1-17, and the species of P-1. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-24 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 3 and 4 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected species.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it has fewer than 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
Claims 1 and 2 recite the limitation "or less carbon atoms" multiple times. Since the number of carbon atoms in a moiety is countable, the word "fewer" must be used instead.
Regarding claim 1, the phrase "in the formula (1)" following the illustration of formula (1) is grammatically incorrect.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are as follows:
Claim 17 recites "a specimen supply mechanism configured to supply a specimen to the ion-selective membrane."
The term "mechanism" is a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Corresponding structure is disclosed in Fig. 4 and the specification's description thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 2, and 5-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims fail to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Regarding claim 1, the colon after the limitation "a membrane solvent" is unclear because it appears to link the following formula (1) to the membrane solvent.
Claims 1 and 2 recite the limitation "a saturated or unsaturated alkyl group" multiple times. The specification does not provide a special definition of an alkyl group. The accepted meaning of an alkyl group is a group -CnH₂n+1 derived from an alkane by removal of a hydrogen atom from any carbon atom. Accordingly, an alkyl group is inherently saturated. The limitation "a saturated or unsaturated alkyl group" indefinite because the specification does not clearly redefine the term alkyl group to encompass an unsaturated group and because a saturated alkyl group is redundant. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).”
Claims 1 and 2 recite the limitation "a saturated or unsaturated alkyl group having 1 or more … carbon atoms" multiple times. In addition to the indefiniteness of an unsaturated alkyl group, as set forth above, it is further unclear what is meant by an unsaturated alkyl group having 1 carbon atom.
Claims 1, 2 and 9 recite the limitation "may have…" multiple times. The use of the modal verb "may" is indefinite because it is not clear whether the following limitations are a required part of the claim. Henceforth, the limitation "may have…" is interpreted as "optionally have…"
Claims 1 and 2 recite the limitations "an alkylcarbonyl group having 1 or more and 20 or less carbon atoms" and "an alkylcarbonyl group having 1 or more and 4 or less carbon atoms." It is completely unclear how an alkylcarbonyl group can have as few as 1 carbon atom. The smallest alkylcarbonyl group is an acetyl group, which has 2 carbon atoms.
Claims 1 and 2 recite the limitation "an alkylcarbonyl group having 1 or more and 20 or less carbon atoms that may have a substituent." Grammatically, the limitation "that may have a substituent" modifies "1 or more and 20 or less carbon atoms." It is completely unclear how the carbonyl carbon atom of an alkylcarbonyl group can have a substituent.
Claims 1 and 2 recite the limitation "an aryl group having 5 or more and 20 or less carbon atoms." It is unclear how an aryl group can have as few as 5 carbon atoms.
Claims 1 and 2 recite the limitation "an aryloxy group having 5 or more and 20 or less carbon atoms." It is unclear how an aryloxy group can have as few as 5 carbon atoms.
Claims 1 and 2 recite the limitation "aralkyl group having 6 or more and 30 or less carbon atoms." It is unclear how an aralkyl group can have as few as 6 carbon atoms. A benzyl group has 7 carbon atoms.
Claim 1 recites the limitation "the substituent of the alkyl group in the (i)." There is insufficient antecedent basis for this limitation in the claim. The claim previously recites "a saturated or unsaturated alkyl group having 1 or more and 20 or less carbon atoms that may have a substituent." Grammatically, the limitation "that may have a substituent" modifies "1 or more and 20 or less carbon atoms," rather than "a saturated or unsaturated alkyl group." In other words, the claim previously recites that 1 or more and 20 or less carbon atoms [each optionally] have a substituent, as opposed the overall alkyl group optionally having a substituent. Claim 2 is indefinite for analogous reasons.
Claim 1 recites the limitations "an alkyloxycarbonyl group having 1 or more and 4 or less carbon atoms" and "an alkyloxycarbonyl group having 1 or more and 20 or less carbon." It is completely unclear how an alkyloxycarbonyl group can have as few as 1 carbon atom.
Claims 1 and 2 recite the limitations "an alkyloxycarbonyloxy group having 1 or more and 4 or less carbon atoms" and "an alkyloxycarbonyloxy group having 1 or more and 20 or less carbon." It is completely unclear how an alkyloxycarbonyloxy group can have as few as 1 carbon atom. Claim 2 is indefinite for analogous reasons.
Claims 1 and 2 recite the limitation "the substituent of each of the alkoxy group, the alkylcarbonyl group, the aryl group, the aryloxy group, and the aralkyl group in the (i)." There is insufficient antecedent basis for this limitation in the claims, for analogous reasons to those set forth above regarding the limitation "the substituent of the alkyl group in the (i)."
Regarding claims 1 and 2, the limitation "(iv) at least one of … represents a group except a hydrogen atom" is non-standard English. The limitation is indefinite because a hydrogen atom (or any other single atom) is not a "group." The examiner suggests "(iv) at least one of … does not represent a hydrogen atom."
Claims 2 and 5-17 are rejected for depending from indefinite claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 5-16 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Steinle 1998 ("Response Characteristics of Anion-Selective Polymer Membrane Electrodes Based on Gallium(III), Indium(III) and Thallium(III) Porphyrins," Analytical Sciences, 1998; IDS).
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Regarding claim 1, Steinle 1998 discloses an ion-selective membrane (title; Figs. 6 and 7) comprising:
a compound represented by formula (1) [Chloro(5,10,15,20-tetraphenylporphyrinato)thallium(III) (Tl(III)[TPP]Cl), Reagents, page 80; Fig. 1);
a polymer [poly(vinyl chloride) (PVC), Reagents, page 80]; and
a membrane solvent [o-nitrophenyloctyl ether (o-NPOE); "Membranes employed in ISEs consisted of 1 wt% metalloporphyrin and various amounts of ionic additives (TDMA+ or TFPB–) in 66 wt% o-NPOE and 33wt% PVC," ISE membrane formulation and EMF measurements, page 80).
Regarding claims 5 and 6, Steinle 1998 discloses that the ion-selective membrane is configured to select a chloride ion ("membranes containing thallium(III) porphyrins yield a general increase in selectivity for chloride over many other lipohilic anions," page 80, first para.; "Membrane electrodes doped with thallium(III) porphyrins provide increased selectivity for chloride when compared to indium(III) counterparts…" page 83, last para.).
Regarding claims 7 and 8, Steinle 1998 discloses that the X in the formula (1) represents a chloride ion [Chloro(5,10,15,20-tetraphenylporphyrinato)thallium(III) (Tl(III)[TPP]Cl), Reagents, page 80).
Regarding claims 9 and 10, Steinle 1998 discloses that the polymer contains at least one kind selected from a polymer of ethylene that has a substituent and that is polyvinyl chloride [poly(vinyl chloride) (PVC), Reagents, page 80].
Regarding claims 11 and 12, Steinle 1998 discloses that the membrane solvent contains an ortho-nitrophenyl ether that is ortho-nitrophenyl octyl ether (NPOE) [o-nitrophenyloctyl ether (o-NPOE); Reagents, page 80].
Regarding claims 13 and 14, Steinle 1998 discloses that the ion-selective membrane according to claim 1, further comprising an ionic additive [sodium tetrakis[3,5-bis(trifluoromethyl)-phenyl]borate (TFPB–), Reagents, page 80] that contains a hydrophilic cation (sodium cation) and a hydrophobic anion [tetrakis[3,5-bis(trifluoromethyl)-phenyl]borate].
Regarding claim 15, Steinle 1998 discloses an ion-selective electrode comprising:
an electrode including at least one kind of conductor [Philips electrode bodies (ISE-561,
Glasblaserei Moller, Zurich), page 80 left col., last para.); and
the ion-selective membrane of claim 1 (see above).
Regarding claim 16, Steinle 1998 discloses an ion sensor comprising:
the ion-selective electrode of claim 15 (see above);
a reference electrode (double-junction reference electrode, page 80 left col., last para.); and
a measuring instrument configured to measure a potential difference between the ion-selective electrode and the reference electrode ("Electrochemical potentials were measured with the following galvanic cell…"; "EMF values were measured at ambient temperature (~22°C) via a Macintosh IIcx computer with a NB-MIO-6X analog/digital input/output board…and an electrode interface module …controlled by custom programmed Lab-View 2 software," page 80 left col., last para).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Steinle 1998 in view of Steinle Dissertation ("Potentiometric and Spectroscopic Studies of Metalloporphyrin-based Polymer Membranes," University of Michigan, 1999; newly cited complete version) and Taniguchi ("Synthesis of oligo(p-phenylene)-linked dyads containing free base, zinc(II) or thallium(III) porphyrins for studies in artificial photosynthesis," Tetrahedron 2010; newly cited).
Regarding claim 2, the compound represented by the formula (1) by Steinle 1998, chloro(5,10,15,20-tetraphenylporphyrinato)thallium(III) (Tl(III)[TPP]Cl), differs from formula 2 in not satisfying limitation (iv) of claim 2 that at least one of the R moieties is not a hydrogen atom. In other words, Steinle 1998 does not disclose at least one non-hydrogen phenyl substituent of the tetraphenylporphyrin.
The analogous prior art of the Steinle Dissertion overlaps with the disclosure of by Steinle 1998, including the disclosure of an ion-selective membrane comprising Tl(III)[TPP]Cl (Chapter 2, pages 43-49). In the Future Directions portion of Chapter 5, Steinle Dissertion further teaches that "it would be prudent to more systemically examine all metalloporphyrins for ion response function" (page 124, last para.). Steinle Dissertion teaches that "the modifications to the starting materials are incorporated into the outer structure of the porphyrin" (page 125, second para.) and that "Within the field of metalloporphyrin-based ion-selective electrodes, modifications of the outer porphyrin structure can affect the measured selectivity (page 125, last para.). Steinle Dissertion further teaches that "sterically-hindered porphyrins could be constructed to block the access of larger ions to the metal center of the metalloporphyrin" and that "more non-polar groups could be added to the porphyrin ring to improve the lipophilicity of the compound within the polymeric membrane" (page 127, first para., italics added).
The analogous prior art of Taniguchi discloses Tl-TMP (section 3.3; Chart 2, copied below), which is a thallium(III) porphyrin of formula 2 that has four mesityl groups.
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Taniguchi teaches that the absorption spectra of thallium(III) complexes of porphyrin monomers that include Tl-TMP are "essentially the same as previously reported for the s of meso-tetraarylporphyrins" (page 5557, first para.). Taniguchi discloses that solubilizing features of substituents was considered and that "a bulky, electronic-rich group" as substituent achieves "a high degree of solubilization in organic solvents" (page 5550, second para.). A mesityl group is a bulky, electronic-rich group. Taniguchi further teaches that the choice of mesityl groups is "to impart solubility" (page 5551, right col.).
According, one of ordinary skill in the art would understand the disclosure of Taniguchi to mean that the mesityl-substituted Tl-TMP has greater solubilization in organic solvents compared to the Tl(III)[TPP]Cl of Steinle 1998 and the Steinle Dissertion. One of one of ordinary skill in the art would also understand that organic solvents such as the o-nitrophenyloctyl ether disclosed by Steinle 1998 and the Steinle are lipophilic and therefore that compounds having greater lipophilicity (such as by the addition of non-polar substituents) have improved solubility in organic solvents.
For the benefit of adding more non-polar groups to the porphyrin ring to improve the lipophilicity of the compound within the polymeric membrane, as taught by Steinle Dissertion, by selecting a thallium(III) complex that is known to have greater solubilization in organic solvents, as taught by Taniguchi, it would have been obvious to one of ordinary skill in the art before the time of filing to replace the Tl(III)[TPP]Cl of Steinle 1998 and the Steinle Dissertion with the more soluble Tl-TMP of Taniguchi.
The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). The use of a known technique to improve similar products in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Steinle 1998 in view of Park 1991 ("Potentiometric Anion Selectivities of Polymer Membranes Doped with Indium(Ill)-Porphyrins, "Electroanalysis, 1991; newly cited).
Regarding claim 17, Steinle 1998 discloses a specimen testing device comprising:
the ion-selective electrode of claim 15 (see rejection above).
Steinle 1998 does not disclose a specimen supply mechanism configured to supply a specimen to the ion-selective membrane.
In the analogous prior art of chloride-selective membrane electrodes comprising metalloporphyrin, polyvinyl chloride, and o-nitrophenyl octyl ether, Park 1991 discloses use of a flow injection system comprising a specimen supply mechanism configured to supply a specimen to the ion-selective membrane, the flow injection system including a pump, valve, and sample loop (Fig. 2, page 911, right col.).
To provide a mechanical or automatic means to replace manual activity, which accomplishes the same result, is within the ambit of a person of ordinary skill in the art. See In re Venner, 120 USPQ 192 (CCPA 1958) (see MPEP § 2144.04).
Park 1991 uses the flow injection system to determine chloride levels in human serum samples (abstract), and Steinle 1998 teaches that thallium(III) porphyrin-based ISEs would offer advantages for detecting chloride in complex samples such as blood (page 83, last para.). For the benefit of an automated means for detecting chloride in blood samples via flow injection analysis, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the specimen testing device of Steinle 1998 with the specimen supply mechanism of Park 1991.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Park 1997 ("Catalytic activities of Al(III)-, Ga(III)-, In(III) AND TI(III)-porphyrin complexes," Main Group Metal Chemistry 1997) discloses ClTl(III)-porphyrin, where the porphyrin is (p-CH3)tetraphenylporphyrin (Table 5), for the catalytic oxidation of olefins. This ClTl(III)-porphyrin is the disclosed and elected species P-1 (see page 24 of specification).
Gorski ("Recognition of Anions Using Metalloporphyrin-Based Ion- Selective Membranes: State-of-the-Art," Electroanalysis 2003) provides a relevant review of the prior art as of 2003.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797
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